Opinion
No. 03-56431.
Argued and Submitted June 7, 2004.
Decided June 10, 2004.
Appeal from the United States District Court for the Central District of California, Florence Marie Cooper, District Judge, Presiding. D.C. No. CV-98-03607-FMC.
Mark A. Finklestein, Esq., Perry J. Viscounty, Esq., Michele D. Johnson, Esq., Latham Watkins, Costa Mesa, CA, for Plaintiff-Appellee.
Glenn W. Peterson, Esq., McDonough, Holland Allen, Sacramento, CA, for Defendant-Appellant.
Before TROTT, RYMER, and THOMAS, Circuit Judges.
Background: Publisher of "Entrepreneur" magazine brought action alleging trademark infringement, unfair competition, and counterfeiting claims against founder of public relations firm operated under name "EntrepreneurPR." The United States District Court for the Central District of California, Florence-Marie Cooper, J., granted summary judgment for publisher on trademark infringement and unfair competition claims, denied its motion on counterfeiting claim, and denied founder's motion for summary judgment. Founder appealed. The Court of Appeals, Berzon, Circuit Judge, 279 F.3d 1135, affirmed in part, reversed in part, and remanded for trial. Following bench trial, the United States District Court for the Central District of California, Florence Marie Cooper, J., entered judgment against founder, and he appealed.
Holdings: The Court of Appeals held that:
(1) federal district court did not fail to follow mandate of prior panel of Court of Appeals, and
(2) federal district court did not err in awarding attorney fees in light of strong, credible evidence that founder intended to confuse consumers.
Affirmed.
1. Trade Regulation 727
Federal district court did not fail to follow mandate of prior panel of Court of Appeals by entering findings of fact and conclusions of law in trademark infringement case, after prior panel decided that there were triable issues of fact that precluded summary judgment, where prior Panel did not decide those issues in favor of defendant as a matter of law, and federal district court did as the prior panel directed by holding bench trial on the disputed factual issues and entered a judgment based on its findings of fact and conclusions of law.
2. Trade Regulation 333, 336, 340.1, 363.1
Likelihood of confusion in trademark infringement case is guided by eight-factor test analyzing (1) strength of the mark, (2) similarity of the marks, (3) relatedness of goods or services, (4) intent in selecting the marks, (5) evidence of actual confusion, (6) marketing channels, (7) likelihood of expansion of product lines, and (8) degree of consumer care; although these factors are important, it is the totality of facts in a given case that is dispositive.
3. Trade Regulation 673
Even where there is no direct competition, profits may be awarded in trademark infringement case in order to make trademark infringement unprofitable under rationale of unjust enrichment.
4. Trade Regulation 729
Federal district court did not err in awarding attorney fees in trademark infringement case, where plaintiff, as publisher of "Entrepreneur" magazine, provided strong, credible evidence that defendant, founder of public relations firm operated under name "EntrepreneurPR," intended to confuse consumers.
5. Trade Regulation 724.1
Defendant in trademark infringement suit waived his right to present the affirmative defense of fair use by failing to assert it before trial court, where none of the other defenses or pleadings fairly put the federal district court on notice as to the substance of the issue.
MEMORANDUM
This disposition is not appropriate for publication and may not be cited to or by the courts of this circuit except as provided by Ninth Circuit Rule 36-3.
Scott Smith appeals the district court's judgment against him after a bench trial. We affirm. Because the parties are familiar with the factual and procedural history of this case, we will not recount it here.
I
Smith's primary argument is that the district court failed to follow the prior panel's mandate and violated law of the case in entering the findings of fact and conclusions of law. However, the prior panel merely decided that there were triable issues of fact that precluded summary judgment. It did not decide those issues in favor of Smith as a matter of law. Thus, the district court did not fail to observe the mandate of the prior panel on remand. As we observed in Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1404 (9th Cir. 1993):
The district court must be given a meaningful opportunity to follow the directive of the circuit court in resolving the issues. Portsmouth Square. Inc. v. Shareholders Protective Committee, 770 F.2d 866, 872 (9th Cir. 1985). The district court should not be reversed for failing to follow a mandate if its decision is within the scope of the remand.
The district court did as the prior panel directed. It held a bench trial on the disputed factual issues and entered a judgment based on its findings of fact and conclusions of law. It did not violate the mandate.
II
We review the district court's findings of likelihood of confusion for clear error. See Levi Strauss Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 (9th Cir. 1985). Likelihood of confusion is guided by an 8 factor test analyzing the: (1) strength of the mark; (2) similarity of the marks; (3) relatedness of goods or services; (4) intent in selecting the marks; (5) evidence of actual confusion; (6) marketing channels; (7) likelihood of expansion of product lines; and (8) degree of consumer care. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Although these factors are important, "it is the totality of facts in a given case that is dispositive." Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (alteration omitted). After a thorough examination of the record of this case, we conclude that the district court did not clearly err in its determination of likelihood of confusion based on the totality of the circumstances.
III
The district court did not err in its damage award. Even where there is no direct competition, profits may be awarded in order to make trademark infringement unprofitable under the rationale of unjust enrichment. Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 124 (9th Cir. 1968). EMI's expert also provided sufficient evidence of Smith's sales and costs to approximate his profits.
The district court also did not err in awarding attorney's fees. Exceptional circumstances justify attorney's fees where acts of infringement are deliberate or willful. See Rio Props., Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1023 (9th Cir. 2002). Because EMI provided strong credible evidence that Smith intended to confuse consumers, attorney's fees were justified.
Smith waived his right to present the affirmative defense of fair use by failing to assert it before the trial court. None of the other defenses or pleadings "fairly put" the district court "on notice as to the substance of the issue." Nelson v. Adams USA Inc., 529 U.S. 460, 469, 120 S.Ct. 1579, 146 L.Ed.2d 530 (2000).
AFFIRMED.